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THE WEEKLY NEWSPAPER FOR THE LEGAL PROFESSION
China has stepped up IP enforcement recentlyInvalidation of Viagra patent actually indicates rule of law’s ascendancy.
method-of-use patents it sought, and China did
characterized the purveyors of this merchandise
the same in 2001. However, Pfizer’s success in
as “greedy, unscrupulous, soulless pirates.”
obtaining this patent proved to be short-lived.
Edward Lanfranco, “Lash Slams China IPR
Driven by the large potential profits for E.D.
Enforcement,” United Press International,
treatments, Pfizer’s rivals—Eli Lilly and Co.,
Property Office (SIPO) invalidated the patent
Bayer A.G. and others—began challenging its
on Viagra that it had granted to Pfizer Inc. just
Most observers agree that this enforcement
method-of-use patent around the world. In
three years earlier. Numerous observers quickly
dilemma can be resolved only through govern-
2000, a U.K. court revoked Pfizer’s method-of-
seized on this decision as yet one more sign of
use patent for its failure to satisfy the novelty
the dire state of intellectual property rights in
Institute, champion of libertarianism, has requirement, and the European Patent Office
China. But instead of heralding the death (or
suggested that “China [has to be] prepared to
followed suit in 2001. The U.S. Patent and
dearth) of IP rights in China, the Viagra case
institute and live by the rule of law.” Roger
Trademark Office is currently re-examining the
could be viewed as highlighting the birth of a
Pilon, “China’s Viagra Test,” Cato Institute,
method-of-use patent it granted to Pfizer,
new era for IP rights enforcement in China.
Aug. 13, 2004, at 1. But this consensus view
ignores what has turned out to be perhaps the
Following in the footsteps of Pfizer’s rivals, a
acted to construct a legal framework for most promising solution to the enforcement
coalition of Chinese drug manufacturers filed
Pfizer’s method-of-use patent. Many believe
that this was the first time that anyone had
ever asked SIPO to invalidate a patent. First,
major intellectual property convention and
dence, demonstrate that Chinese citizens and
the Chinese drug manufacturers argued that
treaty, and its laws and regulations are mostly
companies are eager to enforce their own IP
Pfizer’s patent did not meet the “inventive
up to the rigorous standards established by the
rights and to challenge the IP rights of others.
World Trade Organization’s (WTO) Agree-ment on Trade-Related Aspects of Intellectual
Property Rights (TRIPs). Indeed, the U.S.
In 1991, Pfizer applied for a patent on silde-
trade representative has stated: “Overall, the
nafil citrate, a pharmaceutical compound that
it hoped would act as a heart drug. Pfizer
generally in line with international norms in
was, at that time, most of the developed world,
most key areas.” U.S. Trade Representative,
States, Europe and Japan. Significantly, Pfizer
step” requirement. Generally put, this require-
did not obtain a patent in China, which did
ment precludes patents for inventions that do
not begin granting patents on drugs until 1993. not sufficiently improve on existing knowledge.
lications/2004/asset_upload_file281_6986.pdf.
Underlying this argument was the allegation
that sildenafil citrate’s greatest potential lay in
that sildenafil citrate’s potential as a treatment
the question is how to remedy the one weak
its use as a treatment for erectile dysfunction
for E.D. was obvious or well known prior to the
spot in China’s IP rights regime: enforcement.
(E.D.). Based on this evidence, Pfizer quickly
This problem is reflected in the numerous
applied for a method-of-use patent. Unlike the
street stalls selling bootlegged copies of films
original patent on sildenafil citrate, the new
argued that Pfizer’s patent application was
patent sought to protect a method of using the
marred by insufficient disclosure. For example,
before) they are released in the United States,
drug to treat a specific disease, E.D. By this
the method-of-use patent application included
as well as in the counterfeit drugs that compete
time, China was issuing patents on pharmaceu-
with legitimate offerings by pharmaceutical
ticals, so Pfizer filed its E.D. use claims in
unknown. Pfizer’s own witness, a Nobel
China, as well as in the United Kingdom, the
laureate, conceded that he could not draw a
Scott M. Flicker is a partner, and Matthew S.
definite conclusion from the method-of-use
Dunne is an associate, in the global competition and
patent as to how Viagra could be used to treat
trade group, and in the Washington office, of Paul,
manufacturers to patent not just the drug itself,
E.D. Ultimately, SIPO invalidated the patent
Hastings, Janofsky & Walker. Flicker’s practice
but also every conceivable use for it. In doing
on the second ground, insufficient disclosure.
focuses on intellectual property and international
so, they seek to maximize both their legal
Shortly after SIPO announced its decision,
trade litigation, and Dunne concentrates in interna-
protection and profit potential. In 1998, the
a coalition of 17 Chinese drug manufacturers
tional trade litigation and international arbitration.
United States and Europe granted Pfizer the
declared that they would soon initiate sales of
competing products containing sildenafil Chinese citizen sued Dow Jones &
citrate, and for half the cost of Co. for using a calligraphic painting of “Dao,”
faced by parties seeking to enforce IP rights in
the first character of the company’s Chinese
China was the lack of injunctive relief, which
translation, that he gave to its chief executive
serves as an essential remedy in nearly all IP
appeal SIPO’s decision. Pfizer’s appeal is officer in 1994, but which Dow Jones began
rights regimes throughout the world. The prob-
currently pending before the Beijing People’s
using as its corporate symbol on its Web site.
lem was that the Chinese legal system had no
Intermediate Court. The outcome of the appeal
See Cui Ning and Liu Li, “Awareness of IPR
equivalent concept. As one justice of the
is unclear, but the odds are against Pfizer: Fewer
Rises, with Number of Cases,” Nov. 8, 2004, at
Supreme People’s Court remarked, “[Injunctive
than 20% of SIPO decisions get reversed.
w w w. s i p o . g o v. c n / s i p o _ E n g l i s h / g f x x /
relief] occupies an important position in
Whatever the outcome, given the publicity iprspecial/t20041108_36017.htm.
protective systems of intellectual property
These suits against right[s] of all countries. There are no
corresponding legal stipulations found in the
existing litigious [sic] legal system of our
country.” Jiang Zhipei, “Regarding Preliminary
‘Injunction’ in Patent Suit of China,”
revolution in Chinese society and culture. It
domestic affairs between different Chinese relief. See Patent Law of the People’s Republic
not only reflects the ascendancy of the rule of
citizens and companies. See Cui Ning and Liu
of China, Art. 61. The incorporation of this
law, but also a new willingness on the part of
Li, supra. This spate of litigation has only
remedy into the Chinese legal system reflects
Chinese citizens and companies to employ encouraged Chinese citizens and companies to
the depth of the changes made since 1984.
formal legal mechanisms to enforce or be more proactive in securing their IP rights.
In order to bring its IP rights regime up to
The number of trademark filings in China in
TRIPs standards, China has had to enact a
2003—450,000—exceeded those of any other
host of laws and regulations, overhaul its
patent was first invalidated in the United
country in the world, and the number of patent
dispute resolution process, retrain government
Kingdom and Europe, only SIPO’s decision
applications has quickly risen to close to U.S.
seems to have inspired dire warnings about a
levels. For 2003, patent applications in public about the importance of respecting
purported failure to comply with international
China numbered 300,000, of which and protecting IP rights. The rapidity with
IP obligations. This reaction stems largely from
12,000 were filed by Americans and 251,000 which China has transformed its IP
persistent concerns over the rule of law in
rights regime has been “rarely seen in the
China. Foreigners appear to lack confidence
annals of the history of intellectual property.”
in the ability or willingness of Chinese Historical context
Jiang Zhipei, “The Judicial Protection
institutions to mete out fair and impartial
of Patents in China,” May 23, 1998, at www.chi-
decisions without regard to the nationality or
embrace of IP rights by Chinese citizens and
naiprlaw.com/english/forum/forum2.htm.
companies is nothing short of remarkable.
Of course, the system is not perfect. There
remain, there is significant evidence of a concept of “intellectual
sea change in China’s culture to embrace property rights” was Chinese law recently rights, and there are
and expand the rule of law in the area foreign to most Chinese,
of IP rights. For example, in the Viagra case,
the Chinese drug manufacturers chose to protecting IP rights and
contest the validity of the patent through legal
process rather than by illegally manufacturing
the drugs and selling them on the black market,
as they might have done in the past.
built an IP rights regime from scratch. For
strengthen China’s IP rights regime. The
The depth of this change is reflected in the
example, in 1984, China enacted its first patent
Chinese government will undoubtedly play
new willingness of Chinese citizens to enforce
law. Prior to that, China offered no patent a critical role in this process, but so must
IP rights against sacrosanct state institutions. A
protection at all. Instead, China seized private citizens and companies. Until now,
Chinese artist’s family recently won a copyright
inventions it deemed useful and offered most observers have overlooked that
lawsuit against the Museum of the Chinese
certificates and cash rewards to the inventors.
Revolution for selling copies of the artist’s
That original patent law has been revised a
Viagra case, as well as the other cases discussed
1950s paintings without their consent. dozen times since 1984 to bring it up to TRIPs
in this article, demonstrate that IP litigation by
Zha Xin, “Feature: Lawsuit to Honor standards. Indeed, one observer commented,
private parties offers the most promising
Artist’s Copyright,” at 1-2, at www.china-
“China’s legal infrastructure—laws, enforce-
vehicle for strengthening China’s IP rights
iprlaw.com/english/letters/letter13.htm. This
kind of action would have been unthinkable
processes—are quite new and undergoing a
seemingly endless series of changes since it first
opened out to foreign investment.” Jayanthi
enforce their IP rights against foreign compa-
Iyengar, “Intellectual Property Piracy Rocks
nies. Shanghai Unilever learned this lesson
China’s Boat,” Asia Times, Sept. 16, 2004.
This article is reprinted with permission from the
well after a Beijing resident sued it for using his
patent without his authorization. See Liu Li,
China’s patent law include the addition of new
JOURNAL. 2005 ALM Properties, Inc. All rightsreserved. Further duplication without permission is
“Patent Dispute Lands in Court,” May 13,
categories of patentable items, the extension of
prohibited. For information, contact American Lawyer
2004, at www.chinadaily.com.cn/english/doc/
patent terms to 20 years and the clarification of
Media, Reprint Department at 800-888-8300 x6111.

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